WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION David Robinson v. Brendan, Hight / MDNH Inc. Case No. D2008-1313 1. The Parties
The Complainant is David Robinson of Edinburgh, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons, Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Brendan Hight of Las Vegas, Nevada, United States of America and MDNH Inc. of Las Vegas, Nevada, United States of America, represented by John Berryhill, PhD., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2008. On August 29, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On August 29, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced September 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2008. The Response was filed with the Center on September 29, 2008.
The Center appointed Sir Ian Barker, W. Scott Blackmer and Jon Lang as panelists in this matter on October 8, 2008. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is the founder of a consortium known as MyLife. The aim of the consortium is to provide life insurance. This business was conceived in 2007 and will be launched to the public in 2009. The Complainant plans to sell protection-type life insurance and associated services.
The Complainant has registered trademarks in the United Kingdom for the terms MYLIFE, MY-LIFE and MY LIFE. The registrations are dated June 13, 2008, with a filing date of August 9, 2007. The disputed domain name was registered by Ultimate Search Inc. in October 2000. In February 2005, Ultimate Search Inc. was taken over by a public company, Marchex Inc., of which MDNH Inc. is a subsidiary.
The Respondent failed to reply to cease and desist letters sent by the Complainant dated July 17, 2008 and August 11, 2008. 5. Parties' Contentions A. Complainant
The Complainant has registered trademarks which are identical to or confusingly similar to the disputed domain name. The Complainant has given the Respondent no rights in respect of the trademarks.
The Respondent is not known by the disputed domain name, nor does the Respondent use or has the Respondent made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. Nor is the Respondent making a legitimate or fair noncommercial use of the disputed domain name.
The disputed domain name is not currently active. Nor is it being used in good faith. The Complainant will be unable to market its products if the disputed domain name remains registered to the Respondent. B. Respondent
The Policy does not entitle the Complainant to have a domain name (which has been registered to the Respondent from at least as early as 2005) on the basis of a business conceived in 2007 which will be launched to the public in 2009.
The Respondent MDNH Inc. is a wholly-owned subsidiary of Marchex Inc. which identifies a technical employee, in this case the Respondent Mr. Hight, as the registrant for many of its domain names. MDNH Inc. owns domain names incorporating common words, phrases and expressions.
The Complainant did not show the Respondent's website in which the Respondent provides advertising links and targeting relating to personal care, service and lifestyle resources which one might expect to be associated with the expression “My Life” (which incidentally is a title to a Billy Joel song). Indicated categories on the “click-through” website include life insurance.
Prior to notice of the dispute, the Respondent was using the disputed domain name to provide automatic advertising links to goods and services relating to personal or lifestyle goods and services in accordance with the primary meaning of the phrase “My Life”.
The Complainant has failed to prove registration and use in bad faith. The disputed domain name was originally registered to the predecessor of the Respondent and the Complainant's trademark did not exist at the date of the acquisition by the Respondent of the disputed domain name, whether that be in 2000 by Ultimate Search Inc. or in 2005 when the registration was taken by Mr. Hight for MDNH Inc.
The Respondent was under no obligation to reply to the cease and desist letters.
The Respondent seeks an order from the Panel of reverse domain name hijacking. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred to it:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant owns a registered trademark that is identical to the disputed domain name.
UDRP jurisprudence indicates that it is sufficient for a complainant to show that it has trademark rights as at the date of filing of the complaint. Accordingly, the first criterion under paragraph 4(a) of the Policy is established. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”) at paragraph 1.4. B. Rights or Legitimate Interests and Bad Faith
The Panel considers these matters in tandem because it is quite clear that the Complainant cannot possibly succeed under paragraph 4(a)(iii) of the Policy. The Respondent has owned the disputed domain name from at least 2005 (and possibly earlier because of its merger with or acquisition of the previous registrant which had registered it in 2000).
The Complainant's proposed business did not exist and had not been conceived as at the time of the registration of the disputed domain name. It is, therefore, impossible to prove that the registration was in bad faith or indeed, that there has been use in bad faith.
The Respondent has been using the disputed domain name legitimately since 2005 for a click-through service and it has done so without any knowledge of the Complainant or his business. It could not have acquired such knowledge because the Complainant's first public statement about his proposed business occurred when application was made to register trademarks in 2007.
Accordingly, the Complainant has failed to prove the criterion under paragraph 4(a)(iii) of the Policy and the Complaint must fail. The decision to deny the Complaint is unanimous. C. Reverse Domain Name Hijacking (“RDNH”)
This part of the Panel's decision is by a majority.
This Complaint could never possibly have succeeded because the disputed domain name was registered approximately 2 years before the Complainant's proposed business even existed, let alone before he registered a trademark. Accordingly, the Respondent's application for a finding of RNDH must be seriously considered.
As was the situation in Don Media International GmbH v. Sikreto LLC,WIPO Case No. D2007-1525, it is a “glaring fact” that the fact that the Complainant had no trademark rights at the time of registration of the disputed domain name is an important consideration.
As in the Don Media case, the Complainant's bringing of the case was not primarily to harass the domain name holder. Rather, it appears to have been an aggressive attempt to obtain what was potentially a valuable name to be used for the Complainant's new business.
The Panel considers that a helpful summary of the UDRP jurisprudence on RDNH is found in Mondial Assistance S.A.S. v. Compana LLC,WIPO Case No. D2007-0965 where the Panel said:
“Paragraph 15(e) of the Rules refers to several concepts, namely ‘bad faith', ‘Reverse Domain Name Hijacking', ‘harassment' and ‘abuse of the administrative proceedings', the relationship between which is not entirely clear. However, the key element in this paragraph is bad faith, meaning that if the Panel finds bad faith in the conduct of the Complainant, it should declare so.
Although bad faith is the decisive element of paragraph 15(e), this paragraph is more commonly identified with reverse domain name hijacking, to the extent that the most cited decision, Sydney Opera House Trust v. Trilynx Pty. Limited,WIPO Case No. D2000-1224, requires bad faith and harassment to determine the existence of reverse domain name hijacking (‘to establish reverse domain name hijacking, the Respondent must show knowledge on the part of the Complainant of the Respondent's right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge').
Another common feature of previous panel decisions is that there is a tendency to identify the bad faith requirement with the degree of the Complainant's knowledge of its capability of meeting its burden of proof with regard to the mandatory elements of paragraph 4 of the Policy. For example, in Limited v. Alton L. Flanders,WIPO Case No. D2004-0047 the Panel states that ‘a finding of reverse domain name hijacking is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the policy'.
However, it is important not to overemphasize the Complainant's failure to prove the Complaint, to the detriment of the demonstration of bad faith that is the essence of paragraph 15(e). A complainant with a weak claim may present this complaint in good faith. Not succeeding in the complaint does not amount to an attempt at reverse domain name hijacking except when it involves bad faith in an to attempt to deprive a registered domain-name holder of a domain name (paragraph 1 of the Policy).”
In the present case, the Complaint was an attempt to deprive the Respondent of a registered domain name. This is not simply the phenomenon of a weak case that failed such as, for example, an inadequately proven claim for a common law trademark. The case could never have succeeded. In accordance with the criteria in the Limited case, supra, the Complainant, who is represented by well-known United Kingdom solicitors, should have known at the time of filing the Complaint that he could not prove one of the essential elements of the Policy.
Accordingly, a majority of the Panel makes a declaration of RDNH.
Mr. Lang does not agree that a declaration of RDNH should be made and has appended a dissenting opinion on that point solely. 7. Decision A. Majority Finding
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel unanimously orders that the Complaint be denied. A majority of the Panel further makes a declaration of Reverse Domain Name Hijacking against the Complainant.
Hon. Sir Ian Barker
Presiding Panelist
W. Scott Blackmer
Panelist
Dated: October 27, 2008 B. Dissenting Opinion
Opinion Dissenting Only from the Finding of Reverse Domain Name Hijacking
I agree with my co-panelists that the Complaint should be denied.
I would not however make a finding of RDNH. Paragraph 15(e) of the Rules provides inter alia:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Paragraph 1 of the Rules defines RDNH as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.”
A considerable amount of guidance is available on what constitutes bad faith for the purposes of paragraph 4 of the Policy. There is less guidance in the case of bad faith for the purposes of an RDNH declaration. Bad faith is certainly required (paragraph 1 of the Rules), but what does it mean in this context? One must start by looking at the language of the text in which the term appears, and of course past decisions. Rule 15(e) raises the concepts, not just of bad faith but also of harassment and abuse of process. To my mind, the RDNH “wrong” envisages bad faith in a more literal sense than is envisaged in paragraph 4 of the Policy, where findings of various circumstances allow a panelist to extrapolate to a bad faith finding without requiring a full analysis of whether or not there has in fact been bad faith, as that term is commonly understood or defined outside of the UDRP regime.
In Mondial Assistance S.A.S. v. Compana LLC,WIPO Case No. D2007-0965 referred to in the main decision above, it was said:
“Although bad faith is the decisive element of paragraph 15(e), this paragraph is more commonly identified with reverse domain name hijacking, to the extent that the most cited decision, Sydney Opera House Trust v. Trilynx Pty. Limited,WIPO Case No. D2000-1224, requires bad faith and harassment to determine the existence of reverse domain name hijacking (‘to establish reverse domain name hijacking, the Respondent must show knowledge on the part of the Complainant of the Respondent's right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge').” (emphasis added)
As indicated, the quoted words in parenthesis at the end of the above extract are taken from Sydney Opera House Trust v. Trilynx Pty. Limited,WIPO Case No. D2000-1224. For the sake of completeness, the full quote from that part of the Sydney Opera House decision on the RDNH point is set out below.
“To establish reverse domain name hijacking, the respondent must show knowledge on the part of the complainant of the respondent's right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge; Plan Express Inc. v. Plan Express,WIPO Case No. D2000-0565. Neither circumstance has been shown here.”
I believe these two past decisions, as well as the language of paragraph 15(e) of the Rules support my approach of requiring, for the purposes of an RDNH declaration, conduct, properly demonstrated, that would be regarded in other contexts as well as UDRP proceedings as constituting harassment or bad faith or similarly reprehensible conduct. Adopting this approach, based on the evidence I have seen, I am not prepared to make an RDNH finding.
Jon Lang
Panelist
(Dissenting only as to the finding of Reverse Domain Name Hijacking)
Dated: October 27, 2008
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